Can OpenAI Secure the 'GPT' Trademark? A Comparative Analysis Under US And Indian Trademark Laws

Earlier in December 2022, Open AI had applied for the trademark of GPT of ChatGPT. However, the petition for registration was rejected by the USPTO. The authors would analyze the hinderances which could arise while getting the trademark by OpenAI. Further, the authors would also comparatively analyze the situation in context of the Indian trademark law.

What is Trademark?

A trademark is a sign, or a group of signs, used to identify one entity’s goods or services from those of another. Trademarks are valuable intellectual property assets that help consumers recognize and associate products or services with a particular brand or source. Obtaining a trademark ensures several important benefits including exclusive use, legal protection, etc. It helps the owners to safeguard the identity of their brands and thus other people would be barred to use the concerned mark with regards to similar goods or services.^[1]

What is ChatGPT and GPT-5?

ChatGPT is a conversational artificial intelligence model developed by OpenAI. It works on a highly advanced language model aimed to interpret and produce text that resembles human language in response to user’s input.. It was founded by a group of entrepreneurs and researchers including Elon Musk and Sam Altman in 2015. OpenAI is backed by several investors, with Microsoft being the most notable.^[2] This chatbot by Open AI was launched in 2018 and in its first week gained around 1 million users. Even now, the website records more than 1.5 billion users every month.

The capacity of ChatGPT to provide human-like responses in real-time based on user input is one of its primary strengths. It can produce novels, essays, and poems as well as conversational, natural replies to inquiries. People can ask ChatGPT questions or seek explanation on its responses, making it similar to the automated chat services seen on customer support websites.^[3]

It was launched originally as GPT-1 in June 2018. Following which, various versions including GPT-2, GPT-3, GPT-3.5 were released subsequently. The current version which is GPT-4 was launched in the month of March 2023. GPT-5 is going to be the latest version of the GPT series.

GPT stands for “Generative Pre-trained Transformer”, it entails that a large amount of text is being pre-programmed with more than 300 billion words and 175 billion parameters. This yardstick of data is being polished and revisited with every latest version.^[4]

Contemporary Development

It is not the first time that OpenAI has applied for the trademark of GPT. Considering the rising rival brands, the company had earlier applied for the trademark before USPTO. The trademark office however rejected the petition, citing it to be incomplete.

This application was rejected majorly on 2 grounds-

Firstly, the USPTO stated that the OpenAI did not pay the required fee along with the petition. The payment of associated fee is a procedural aspect behind registration of a trademark, which the party’s attorney failed to pay.

Secondly, Open AI also failed to provide “appropriate documentary evidence supporting the justification of special action.” Special Action refers to situations where an applicant for trademark registration requests specific or exceptional treatment of their application by the trademark office. This can encompass various unique circumstances or requests, and the applicant must provide compelling reasons and evidence to support their request. In some cases, applicants may have specific reasons for requesting special action in their trademark registration process.^[5] These reasons might include a need for expedited processing, a request to bypass certain procedural steps, or other exceptional circumstances. The special action here was an application filed by the company, for the speedy process of registration considering the burgeoning of counterfeit websites and names. For the same, no additional evidence was provided and consequently, the petition was rejected.

In July 2023, Open AI has again applied for the trademark of GPT-5 before launching it. The company has to be cautious considering its previous submission before the USPTO. Other than that, there might arise more problems for securing the trademark of the same.

US Trademark Law

In US, the trademark registration is governed by the U.S. Trademark Act or the Lanham Act, 1946. The major problem which can hinder the path of OpenAI is the aspect of “distinctiveness” under trademark law. Section 2(e) of the Act mandates that the name of the product cannot be descriptive in nature. It refers that the name representing the product cannot describe the nature of the product. Therefore, if a term is considered too generic or descriptive, it may not qualify for trademark protection.^[7] GPT, as explained earlier, stands for “Generative Pre-trained Transformer”, which very evidently describe its nature. It describes the whole programming of Chat GPT including its working and function.

However, Open AI can invoke the defense of “Acquired distinctiveness” or “Secondary meaning” under section 2(f) of the Act. It acts as an exception to the non-inherent distinctiveness of the product. To avail it, other than showing the advertising expenditure, OpenAI would have to provide the length of time of use of the mark and proof of good reputation in the market.^[8] As mentioned earlier, the chatbot was launched as GPT-1 in 2018 and receives more than 1.5 billion users every month. This would be a concrete contributing factor to determine the acquired distinctiveness.

Another major issue which can arise is the multiple users of the same name. In recent times, various apps and websites have developed "GPT", which is used in various academic and industry contexts for years to describe a class of language models. This could be hit by section 2(d) of the Act, which talks about Likelihood of Confusion. It refers to the fact that a trademark would not be registered if it would cause confusion among the users from the lens of average intelligence.^[9] Many organizations and developers have built upon the GPT architecture to create their own models and products. “ThreatGPT, MedicalGPT, DateGPT and DirtyGPT” are just an example of the few entities which applied for the trademark before the USPTO in recent months. Therefore, OpenAI would have to provide proof of their long-standing use, good status, and mark's distinctiveness i.e., the factors under section 2(f). Further, through adding the digit 5 as in GPT-5, they can contend that their use of the mark does not conflict with the operations of other businesses that own comparable marks.

Indian Trademark Law

Both India and US are a part of the Madrid System, while India joined it in 2013, US has been a part of it since 2003. The Madrid System is an efficient and inexpensive method to register and manage trademarks globally. Unlike the traditional system of getting the trademark registered in each country, it acts as a corpus to register the trademark globally through World Intellectual Property Organization (WIPO).^[10] Although this system has made the registration process timesaving, yet the application has to go through each country’s IP provisions. Therefore, it becomes important to understand how the application would be dealt under Indian IP laws.

The legal framework of India and Unites States is similar in terms of Intellectual Property Rights. Both the countries are a part of the Trade Related Aspects of Intellectual Property Right (TRIPS) Agreement. The TRIPS Agreement is regarded as a new framework for intellectual property standards protection and it significantly safeguards intellectual property in trade-related regions. It also has the distinction of being the first legal agreement to address all areas of intellectual property with a number of specific clauses.^[11]

In India, the trademark law is governed by the Trade Marks Act, 1999. The provisions are inclusive of the general principles being purported by the TRIPS Agreement. If OpenAI would have applied for the trademark of GPT in India, the issue of distinctiveness would have arisen. Section 9 of the Trade Marks Act, 1999 states that a trademark cannot be registered if it primarily comprises symbols or indications that, within the industry, describe the type, quality, quantity, intended use, attributes, source location, production timeframe, or other traits of the goods or services.

Similarly, the concept of “Acquired distinctiveness” or “Secondary meaning” is applicable in India as well. Although, there are minor differences such as, the TRIPS suggest 3 years period as the minimum time to be in market, whereas India has increased it to 5 years. The case of “Burger King and Burger Singh” is a quintessential example of it. In this case, the court observed that “Burger King's trade mark had acquired distinctiveness through extensive use and promotion in India, and that there was no likelihood of confusion between the two marks. The court further noted that Burger King had a prior worldwide reputation and that its trademark had been registered in India in good faith”.

ChatGPT is an AI software which was created by OpenAI, a chatting bot which can act like human in terms of conversation it can answers your question, can tell stories as well. Though it was first in the market but failed to get the trademark for the GPT by US Trademark and Patent Office. The application was rejected earlier, following which, the corporate has applied for the trademark of its latest version GPT-5. However, OpenAI might have to go through some serious questions before securing the trademark. The whole development would revolve around the issue of descriptiveness and its exception including Acquired distinctiveness or Secondary meaning. Had the application been presented in India, the consequences would have been the same. Since both India and US have acquired the IPR laws from the TRIPS Agreement, they share similar laws in relation to registration of trademark and patent. Furthermore, Intellectual Property Rights are established rights and USPTO would have to consider all the necessary factors before providing a trademark of the GPT to the US based corporation, OpenAI.

Views are personal.

[1] Christine Haight Farley and Irene Calboli, The Trademark Provisions in the TRIPS Agreement, Social Science Research Network (Oct. 22, 2019), https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3471430.